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What In-house Counsel Should Know about the Use of Open Source Software in Their Organizations? - Presentation: Colin Raufer, The Boeing Company - IP Law Summit

Colin Raufer, Esq who is an IP Counsel at The Boeing Company delivered his presentation at the marcus evans IP Law Summit in Las Vegas, NV, March 20-22, 2014.

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What In-house Counsel Should Know about the Use of Open Source Software in Their Organizations? - Presentation: Colin Raufer, The Boeing Company - IP Law Summit

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Boeing Defense, Space & Security
What In-House Counsel Should KnowWhat In House Counsel Should Know
About the Use of Open Source Software
in Their Organizationsin Their Organizations
Colin Raufer
Intellectual Property Counsel
March 20 2014
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March 20, 2014

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Open Source Software
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• DISCLAIMER: The following information is being• DISCLAIMER: The following information is being
provided for educational purposes only, and is not
intended to constitute legal advice. The views
d th f th P t d d texpressed are those of the Presenter and do not
necessarily represent the views of The Boeing
Company.p y
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6.
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Open Source Software is generally defined to bep g y
software whose source code is available for licensees to
modify and improve freely
LINUX Software may be the most popular open source
software program, and it is made available under the
GNU G l P bli Li (GPL) it ibli thGNU General Public License (GPL), or its sibling, the
GNU Library or “Lesser” General Public License (LGPL)
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OPEN STANDARDS
Open Standards and Open Specifications, which promote
interoperability are not the same as Open Source Softwareinteroperability, are not the same as Open Source Software
(OSS)
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10.
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CAN YOU COMPLY WITH THE REQUIREMENTS OF THE
LICENSE?
*Copyright Legends shall be reproducedCopyright Legends shall be reproduced
*Use of the software may be audited
Do you have the procedures in place to ensure compliance?
Are you documenting your modifications and improvements?
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VIRAL INFECTION
• Any derivative work must be released as open source
• Is there a Publication Requirement?• Is there a Publication Requirement?
• Source Code must be provided or made available to all
requestors
S C d t b t d• Source Code must be posted
• Your proprietary code is now open source !
• You have just infected your customer !j y
GREATEST RISK FROM AN IP PERSPECTIVE.
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Example from an End User License Agreement (EULA):p g ( )
COMMERCIAL DISTRIBUTION
“If a Contributor includes the Program in a commercial product offering,
such Contributor (“Commercial Contributor”) hereby agrees to defend
and indemnify every other Contributor (“Indemnified Contributor”)and indemnify every other Contributor ( Indemnified Contributor )
against any losses, damages and costs (collectively “Losses”) arising
from claims, lawsuits and other legal actions brought by a third party
against the Indemnified Contributor to the extent caused by the acts oragainst the Indemnified Contributor to the extent caused by the acts or
omissions of such Commercial Contributor in connection with its
distribution of the Program in a commercial product offering”
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INTELLECTUAL PROPERTY OBLIGATION IN THE
LICENSE
If you have knowledge that a party claims an intellectualIf you have knowledge that a party claims an intellectual
property right in a particular functionality or code (or its
utilization under this license), you MUST include a text file
ith th d di t ib ti titl d “LEGAL” hi hwith the source code distribution titled “LEGAL” which
describes the claim and the party making the claim in
sufficient detail that a recipient will know whom to contact.p
THIS AFFIRMATIVE OBLIGATION IS PROBLEMATIC.
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PATENT STRATEGY
Example of Grant of Rights in General Public License
(GPL):(GPL):
“Subject to the terms of this Agreement, each Contributor hereby grants
Recipient a non-exclusive worldwide royalty-free patent license underRecipient a non exclusive, worldwide, royalty free patent license under
Licensed Patents to make, use, sell, offer to sell, import, and otherwise
transfer the Contribution of such Contributor, if any, in source code and
object code form.”
OR
“You agree not to use any information derived from your review of the
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ou ag ee ot to use a y o at o de ed o you e e o t e
Covered Code … for the purposes of asserting any of your patent rights.”

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LINKING TO LIBRARIES AND DATABASES
Static vs. Dynamic Linking
Static Linking may be deemed to be a derivative work and
thus loss of proprietary status
Dynamic Linking arguably allows you to maintain proprietary
status
The current state of the Law is very much unsettled
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TYPICAL CORPORATE MISCONCEPTION
Company X appears to be under the impression that making
the source code available to customers is at Company’sthe source code available to customers is at Company s
option, when it is in fact a requirement of the license under
which Company obtained the original source code
“They are only getting object code, but they may be entitled
to source code” (look at license & contract)( )
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WHAT TO DO ???
1. Establish and Use a Corporate Due Diligence Process.
Preferably electronically on the Corporate IntranetPreferably electronically on the Corporate Intranet.
2. Extract the open source code, and insert a proprietary
l treplacement.
3. Company must clearly identify the existence of any openp y y y y p
source in its products and inform customers of their rights
to use, modify and distribute such open source.
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WHAT TO DO???
4. Read, Read, Read the documents. Cut through the
legalese and boilerplate to try and understand whatlegalese and boilerplate to try and understand what
obligations the Company is undertaking.
5 A k i t d ti5. Ask pointed questions :
What to you plan to do with this software?
Internal use only or distribution? (the answer mayy ( y
determine if the license even applies)
Widely disseminated or closely held?
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6. Keep a meticulous record of open source content.

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PRACTICAL ADVICE FOR SUPPLIER MANAGEMENT
CONTRACTS:
Recognize that open source software is coming “in the door” inRecognize that open source software is coming in the door in
software that is “licensed-in”
Recognize that open source software is provided essentially “asRecognize that open source software is provided essentially as
is” with no warranties or legal protection
Do not pass through non-existent warranties !!!Do not pass through non-existent warranties !!!
Make open source issues grounds for termination of a
subcontract thereby creating contractual and licensing remedies
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subcontract, thereby creating contractual and licensing remedies.

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Example of T’s & C’s addressing OSS:p g
26.PROHIBITED SOFTWARE
(a) This clause only applies to Work that includes the delivery of software.
(b) As used herein, “Prohibited License” means the General Public License (“GPL”) or
Lesser/Library GPL, the Artistic License (e.g., PERL), the Mozilla Public License, the
Netscape Public License, the Sun Community Source License, the Sun Industry
Standards License, or variations thereof, including without limitation licenses referred to
as “GPL-Compatible, Free Software License.” (c) As used herein, “Prohibited Software”
means software that incorporates or embeds software in, or uses software in
connection with as part of bundled with or alongside any (1) open source publiclyconnection with, as part of, bundled with, or alongside any (1) open source, publicly
available, or “free” software, library or documentation, or (2) software that is licensed
under a Prohibited License, or (3) software provided under a license that (a) subjects
the delivered software to any Prohibited License, or (b) requires the delivered software
to be licensed for the purpose of making derivative works or be redistributable at no
charge, or
(c) Obligates BUYER to sell, loan, distribute, disclose or otherwise make available or
accessible to any third party (i) the delivered software, or any portion thereof, in object
code and/or source code formats, or (ii) any products incorporating the delivered
software or any portion thereof in object code and/or source code formats
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software, or any portion thereof, in object code and/or source code formats.
(d) Unless SELLER has obtained BUYER’s prior written consent, which BUYER may
withhold in its sole discretion, SELLER shall not use in connection with this Contract, or
deliver to BUYER, any Prohibited Software.

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CONCLUSION
IGNORING THE ISSUE WILL NOT MAKE IT GO AWAY:
“If you are using software that you did not write yourself, you
are either a Licensee or an Infringer!”
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